TTAB Affirms Refusal of THERAFIT Because it Identifies a Component, Not Applicant's Bed Sheets
The Board affirmed a refusal to register the mark THERAFIT for "bed sheets," agreeing with Examining Attorney David I that applicant's specimen failed to show the mark in use in connection with the goods. Instead, the Board found that "[t]he mark will be perceived as identifying the elastic component of the bed sheets and not the overall finished sheets without regard to any of their particular features." In re Ther-A-Pedic Associates, Inc., Serial No. 86983542 (September 13, 2019) [not precedential] (Opinion by Judge Frances Wolfson).
Applicant's specimen of use (above) depicted packaging for the goods and displayed the phrase "with THERAFIT technology." The critical issue, of course, was how the word THERAFIT would be perceived by the relevant consuming public. In order to function as a trademark, "Applicant's mark must be associated with the goods and signify to purchasers the source of the goods sold or offered for sale."
The Board found that the relevant size and placement of the wording, including the mark THERAPEDIC followed by the registration symbol, "gives the impression" that the THERAPEDIC mark "identifies the sheet set as a whole." The relatively small size and placement of THERAFIT "contribute to it being perceived as identifying the elastic feature of the sheets, rather than the sheets themselves." Also, the design element incorporating the term "fit" suggests the elasticized corners of the fitted sheets.
Applicant argued that the goods fall in class 24 (the classification for the finished product), since the elastic cannot be "disassociated" from the sheets. The Board was unmoved. "Classification is assigned according to the goods as identified in the application, and is not indicative of whether the specimen shows use of the designation as a trademark for the identified goods."
The Board concluded that consumers "will not directly associate the proposed mark with the involved goods such that it would indicate the source of the goods."
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TTABlog comment: According to TMEP § 1402.05(a), "Components or ingredients sold as part of a finished product are classified in the class of the finished product, since the components or ingredients have been incorporated into other finished goods." So perhaps THERAFIT is registrable as a component of bed sheets?
Text Copyright John L. Welch 2019.
posted by John L. Welch @ 9/18/2019
2 comments
2 Comments:
There is a simple solution here that I've employed several times to overcome these types of refusals-- you place the generic name of the goods in front of the word "technology."
In this instance, THERAFIT sheet technology.
Every Examining Attorney I've ever worked with has accepted that format as trademark use for the generic goods, despite the reference to a technology associated with those goods.
The Office is fixated on "ensuring the integrity and accuracy of the use-based register" yet it goes out of its way to refuse registration to this mark that clearly is in use in commerce. There can and frequently are be more than one source-identifying trademark applied to goods. Consumers are able to recognize matter that serves as a mark, and they are unlikely to be affected by the technical registrability of a mark that identifies a component of the goods they are purchasing rather than the goods themselves. I think it is a wrong-headed approach to prevent the register from reflecting the commercial realities of the marketplace due to an overly bureaucratic and technical application of specimen rules.
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